Domain name - Domain name dispute resolution policy - Trademark - Service mark - Identical - Confusingly similar - Legitimate Interest - Bad faith registration - Bad faith use.

Complainant is a registrant of the mark, STATE FARM and has used said mark in relation to insurance and financial services since 1930. Complainant also registered the domain name STATEFARM.COM in 1996.  Respondent is an individual who registered the domain names STATEFARMJOBS.COM and STATEFARMCAREERS.COM in 1999. Although Respondent did not appear at the hearing the Panel held it did not suffer any prejudice with respect to procedural fairness.

Held, Names Transferred to Complainant

It was held that the domain names registered by Respondent are confusingly similar to the registered marks of Complainant.

Complainant's mark is well known throughout the world and the mark STATE FARM has been registered in association with numerous products and services offered by Complainant.  Respondent would have been aware of Complainant's interest in the domain names and has failed to demonstrate any legitimate interest in the mark.

Respondent primarily registered the domain names for the purpose of selling then to Complainant.  Respondent has also registered the names to divert traffic from Complainant's website, to its own website, where Respodent is offering similar goods and services. Respondent also registered the names to disrupt the business of Complainant.  This was held to be bad faith registration.

Respondent's intent to sell the domain names,  its use of the domain names to divert traffic from Complainant's website for its own commercial gain and its intent to disturb Complainant's business was held to be bad faith use.
 

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Decision referred to
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Meyerson, Panelist:-

The above-entitled matter came on for an administrative hearing on June 6, 2000, before the undersigned on the Complaint of State Farm Mutual Automobile Insurance Company, hereafter “Complainant," against Richard Pierce, hereafter “Respondent." Janice K. Forrest, Assistant Counsel, State Farm Automobile Insurance Company, appeared on behalf of Complainant.  Upon the written submitted record, the following decision is made:

PROCEDURAL FINDINGS
Domain Names: STATEFARMJOBS.COM; STATEFARMCAREERS.COM
Domain Name Registrar:   Network Solutions, Inc.
Domain Name Registrant:   Richard Pierce
Dates of Domain Name Registration:  July 21, 1999
Date Complaint Filed:   May 11, 2000

Date of Commencement of Administrative Proceeding in Accordance with Rule 2(a)(1) and Rule 4(c), ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") :  May 11, 2000

Due date for a Response:  May 31, 2000

Respondent did not file a response as required by Rule 5(a).

After reviewing the Complaint, and determining it to be in administrative compliance, the National Arbitration Forum (The Forum) forwarded the Complaint to the Respondent on May 11, 2000 in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c).  In compliance with Rule 4(d), The Forum immediately notified Domain Name Registrar Network Solutions, Inc. ("Network Solutions"), the Internet Corporation for Assigned Names and Numbers ("ICANN"), and the Respondent that the administrative proceeding had commenced.  Respondent did not file a response as required by Rule 5(a).

On July 21, 1999, Respondent registered the domain names STATEFARMJOBS.COM and STATEFARMCAREERS.COM with Network
Solutions the entity that is the registrar of domain names.  On May 13, 2000
Network Solutions verified that Respondent is the registrant for the domain names
STATEFARMCAREERS.COM and STATEFARMJOBS.COM and that further by registering these domain names with Network Solutions, Respondent agreed to resolve any dispute regarding its domain names through the Rules which incorporate ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

FINDINGS OF FACT
The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding.  Having been duly selected, and being impartial, the undersigned makes the following findings and conclusions.

1. Complainant first began using the STATE FARM trademark in 1930.

2. Complainant registered STATE FARM with the Patent and Trademark Office on June 11, 1996 

3. The following marks also have been registered with the Patent and Trademark Office: State Farm Insurance Companies; State Farm Insurance; State Farm Benefit Management Account; State Farm Bayou Classic logo; and State Farm Bayou Classic.

4. Complaint has registered the domain name, statefarm.com.

5. Respondent registered the domain names STATEFARMJOBS.COM and
STATEFARMCAREERS.COM on July 21, 1999. 

6. The public associates the phrase "State Farm" with the owner of the service mark "State Farm."

7. Respondent's two domain names are confusingly similar to Complainant's service mark.

8. Evidence produced by the Complainant demonstrates that Respondent intentionally is seeking to divert business from Complainant for the sale of similar goods or services through electronic commerce.

9. Respondent has shown no legitimate interest to the use of any domain name including the service mark "state farm."

CONCLUSIONS
The Respondent has registered and used the domain names STATEFARMJOBS.COM and STATEFARMCAREERS.COM. in bad faith as follows:

1. Circumstances indicate that Respondent has acquired the domain names 
STATEFARMJOBS.COM and STATEFARMCAREERS.COM primarily for the
purpose of selling, renting or otherwise transferring the domain name registration to
the Complainant who is the owner of the trademark or service mark site contrary to Policy, Paragraph 4(b)(i).
2. The Respondent has violated Policy 4(b)(iii) because Respondent wrongfully registered domain names STATEFARMJOBS.COM and STATEFARMCAREERS.COM  primarily for the purpose of disrupting the business of Complainant. 

3. Respondent, without any established legitimate basis for doing so, used the domain names STATEFARMJOBS.COM  and STATEFARMCAREERS.COM to attract, for commercial gain, internet users to Respondent’s web site or other on-line location, and Respondent intentionally created a likelihood of confusion with the Complainant’s mark as being a source, sponsor, affiliate, or endorser of Respondent’s web site or location or of a product or service on Respondent’s web site in violation of  Policy 4(b)(iv). 

DECISION
Based upon the above findings and conclusions, and pursuant to Rule 15 it is decided as follows:

The undersigned directs that the domain names STATEFARMJOBS.COM and STATEFARMCAREERS.COM registered by Respondent Richard Pierce be transferred to Complainant State Farm Mutual Automobile Insurance Company.